Solid Works Corporation v. Lee TaeJoong
Claim Number: FA0112000102817
PARTIES
The Complainant is Solid Works Corporation, Concord, MA (the ¡°Complainant¡±) represented by Holly Stratford. The Respondent
is Lee TaeJoong, Seoul, Korea (the ¡°Respondent¡±).
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at
issue is <solidworks.info>
registered with YesNIC Co. Ltd.
PANEL
The undersigned
certifies that he has acted independently and impartially and to the best of
his knowledge, has no known conflict in serving as Panelist in this proceeding.
Kyung-Han Sohn sits as
Panelist.
PROCEDURAL
HISTORY
The Complainant
submitted a Complaint to the National Arbitration Forum (¡°the Forum¡±)
electronically on December 12, 2001; the Forum received a hard copy of the
Complaint on December 14, 2001.
On January 4,
2002, YesNIC Co. Ltd. confirmed by e-mail to the Forum that the Domain Name <solidworks.info> is registered
with YesNIC Co. Ltd. and that the
Respondent is the current registrant of the name. YesNIC Co. Ltd. has verified that the Respondent is bound by the YesNIC Co.
Ltd. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN¡¯s Uniform Domain
Name Dispute Resolution Policy (the ¡°Policy¡±).
On January 11,
2002, a Notification of Complaint and Commencement of Administrative Proceeding
(the ¡°Commencement Notification¡±), setting a deadline of January 31, 2001 by
which the Respondent could file a Response to the Complaint, was transmitted to
the Respondent via e-mail, post and fax, to all entities and persons listed on
the Respondent¡¯s registration as technical, administrative and billing
contacts, and to postmaster@solidworks.info by e-mail.
A timely Response
was received and determined to be complete on January 24, 2002.
On February
8, 2002,
pursuant to the Complainant¡¯s
request to have the dispute decided by a single-member
Panel, the Forum appointed Kyung-Han Sohn as Panelist.
On February 9, 2002, this Panel issued an order that,
pursuant to ICANN Rule 11, and in consideration of the fact that the Respondent¡¯s
registration agreement is in Korean and of the circumstances of the
administrative proceeding, the Complaint and required documents shall be
submitted by the Complainant to the Forum in English and Korean and be
transmitted to the Respondent, and the Respondent may submit the
Response in Korean or English, and other communications to and from
the Forum shall be in English.
RELIEF
SOUGHT
The Complainant requests
that the Domain Name be transferred from the Respondent to the Complainant.
PARTIES¡¯
CONTENTIONS
A. The Complainant
1. The Complainant
manufactures and sells computer software products, and has used ¡°SolidWorks¡± as
a trade name of the Complainant¡¯s company and as a trademark of its computer
software products in the field of computer-aided design. The Complainant
introduced Solidworks95 in 1995 and has introduced updated software products in
the following years in the United States and in numerous other countries. The trade name and the products of the
Complainant can be identified in the Complainant¡¯s website, <solidworks.com>.
2. The Complainant
registered ¡°SolidWorks¡± as a trademark with the United States Patent and
Trademark Office on August 16, 1995 for its software products in the field of
computer aided design (U.S.Reg.No.2030461). The Complainant registered ¡°SolidWorks¡± as a trademark in
Korea on November 7, 1997 for goods described as computer program recorded
tape, disk, diskette, and CD-ROM (Reg.No.381144), and also in at least
thirty-two other countries in the world for the similar products.
3.
The Respondent has no rights or legitimate interests in the Domain Name <solidworks.info> because the Respondent has not been commonly known by
the Domain Name nor has it carried out any business under the Domain Name.
4.
The Complainant e-mailed the Respondent to inquire about the Respondent¡¯s
intention in registering the Domain Name <solidworks.info> and to request transferring the Domain Name to the
Complainant. However, the
Respondent refused transferring the Domain Name to the Complainant stating in
his return e-mail that since the Respondent is in the process of planning the
use of the Domain Name, the Respondent cannot inform the Complainant about his
plan.
5.
Although the Complainant is not sure of the Respondent¡¯s intention in registering
the Domain Name <solidworks.info>, it is certain that the Respondent is preventing the
Complainant from using its registered trademark with the ¡°.info¡± top-level
domain. Therefore, the Domain Name
registration should be transferred to the Complainant who has legitimate rights
to the Domain Name as the owner of the registered trademark.
B. The Respondent
1. The Respondent is
a university student majoring in mechanical engineering. The Respondent
registered the Domain Name <solidworks.info> with an intention of
forming a group of people to exchange information about ¡°SolidWorks¡± products,
and the Respondent has not proposed sales for commercial purposes through the
Domain Name.
2.
The Respondent registered the Domain Name during the Open Registration
Period after the Sunrise Period was over.
3.
If the Complainant has legitimate rights to the Domain Name <solidworks.info>, the Complainant should have
registered during the Sunrise Period. The Complainant forfeited his rights to
the Domain Name by not registering during the Sunrise Period.
FINDINGS
The findings of the undersigned is as follows:
1. The Domain Name
is identical to the registered trademark of the Complainant in Korea, in the United
States, and in numerous other countries;
2.
The Complainant failed to prove that the Respondent does not have rights or
legitimate interests in respect of the Domain Name; and
3.
The Complainant failed to prove that the Domain Name has been registered and
used by the Respondent in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution
Policy (the ¡°Rules¡±) instructs this Panel to ¡°decide a complaint on the basis
of the statements and documents submitted in accordance with the Policy, these
Rules and any rules and principles of law that it deems applicable.¡±
Paragraph 4(a) of
the Policy requires that the Complainant must prove each of the following three
elements to obtain an order that a domain
name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent
has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical
and/or Confusingly Similar
According to the
statements
and the evidence submitted
by the Complainant, it is undisputed that the Complainant registered its trademark ¡°SolidWorks¡± in 32 countries
including the United States and Korea for such goods as computer software
products in the field of computer aided design prior to the Respondent¡¯s registering the Domain
Name. Further, the Respondent¡¯s
disputed domain name is identical with the trade name of the Complainant¡¯s
company and with the widely
known U.S. registered trademark
of the Complainant. See Viewsonic Corp.
v. Informer Assoc. Inc., D2000-0852
(WIPO Sept. 6, 2000) (finding that the Domain
Names <viewsonic.net> and
<viewsonic.org> are identical to the Complainant¡¯s VIEWSONIC mark).
Therefore, the Complainant proved adequately that the
Domain Name is identical and/or confusingly similar to the trademark of the
Complainant.
Rights
or Legitimate Interests
Since there is a greater possibility that <.info>
domain names are registered for non-business & non-commercial purposes such
as dissemination of useful information unlike <.com> and <.biz>
used for business & commercial purposes, necessity of layperson¡¯s free use
shall be considered as well as protection of a specified person¡¯s exclusive
right in interpreting ¡°Legitimate Interests¡± or ¡°Bad Faith.¡±
Concerning
<.info> domain names, priority to register was offered to the
parties who have legitimate rights to domain names during the Sunrise Period,
and the Respondent registered the Domain Name during the Open Registration
period after the Sunrise Period was over.
Therefore, it can be regarded that the Respondent acquired relatively
stronger right by registering the Domain Name under <.info> than
under the existing gTLDs such as <.com>, <.net>, and <.org>. Further, although the Respondent is not
practically using the Domain Name after the registration, considering the
Respondent¡¯s contention that he is in the process of constructing a homepage
and the fact that only four months passed from the registration of the Domain
Name to initiation of this arbitration proceeding, it cannot be concluded that
legitimate interests do not exist just because of nonuse.
Therefore,
the
Complainant did not adequately prove that the
Respondent does not have any rights or legitimate interests with respect to the
Domain Name.
Since the Respondent registered the Domain Name during
the Open Registration Period after the Sunrise Period ended, the Complainant need
stronger evidence to prove that the Respondent
registered the Domain Name in bad faith.
Although it is accepted that the Respondent had
knowledge about the Complainant¡¯s trademark before the Respondent registered
the Domain Name, the fact itself does not automatically presume the Respondent¡¯s
bad faith. The Complainant¡¯s contention that the Respondent registered the
Domain Name with the intention to disrupt the Complainant¡¯s business is without
reason because the Domain Name was lawfully registered during the Open
Registration Period. If the Complainant¡¯s contention is accepted, bad faith can
be found regardless who registered the Domain Name on the reason of disruption
purpose of the Complainant¡¯s business, therefore the system of offering
layperson a chance to register after the Sunrise Period ended will become
meaningless.
By looking at the contents of the e-mails exchanged
between the Complainant and the Respondent, it cannot be concluded that the
Respondent registered the Domain Name for the purpose of either sales or
disruption of the Complainant¡¯s business.
Therefore, the Complainant did not adequately prove the Respondent¡¯s bad
faith.
DECISION
The Complainant has not fulfilled all three
requirements of the paragraph 4(a) of the Policy, therefore, it is the decision
of the Panel that the relief sought not be granted, and this complaint be
dismissed.
Accordingly, for all of the foregoing reasons, it is
ordered that the Complainant¡¯s request for transfer of the Domain Name <solidworks.info> be dismissed.
Kyung-Han Sohn, Panelist
Dated: March 8, 2002